WIPO Arbitration and Mediation Center

ADMINISTRATIVE PANEL DECISION

Andrey Ternovskiy dba Chatroulette v. Privacy.co.com, Privacy.co.com, Inc Privacy ID# 793442

Case No. D2018-1702

1. The Parties

The Complainant is Andrey Ternovskiy dba Chatroulette of Sliema, Malta, represented by CSC Digital Brand Services Group AB, Sweden.

The Respondent is Privacy.co.com, Privacy.co.com, Inc Privacy ID# 793442 of Cheyenne, Wyoming, United States of America (“United States”).

2. The Domain Name and Registrar

The disputed domain name <chattoulette.com> is registered with Sea Wasp, LLC (the “Registrar”).

3. Procedural History

The Complaint was filed with the WIPO Arbitration and Mediation Center (the “Center”) on July 27, 2018. On July 27, 2018, the Center transmitted by email to the Registrar a request for registrar verification in connection with the disputed domain name. On July 27, 2018, the Registrar transmitted by email to the Center its verification response confirming:

(a) it is the Registrar for the disputed domain name;

(b) the disputed domain name is registered in the name of the Respondent and the contact details are correct;

(c) the language of the registration agreement is English;

(d) the disputed domain name was registered subject to the Uniform Domain Name Dispute Resolution Policy (the “Policy” or “UDRP”), and the UDRP applies to the disputed domain name.

The Center verified that the Complaint satisfied the formal requirements of the Policy, the Rules for Uniform Domain Name Dispute Resolution Policy (the “Rules”), and the WIPO Supplemental Rules for Uniform Domain Name Dispute Resolution Policy (the “Supplemental Rules”).

In accordance with the Rules, paragraphs 2 and 4, the Center formally notified the Respondent of the Complaint, and the proceedings commenced on August 7, 2018. In accordance with the Rules, paragraph 5, the due date for Response was August 27, 2018. The Respondent did not submit any response. Accordingly, the Center notified the Respondent’s default on August 28, 2018.

The Center appointed Warwick A. Rothnie as the sole panelist in this matter on September 14, 2018. The Panel finds that it was properly constituted. The Panel has submitted the Statement of Acceptance and Declaration of Impartiality and Independence, as required by the Center to ensure compliance with the Rules, paragraph 7.

4. Factual Background

The Complainant operates an online chat website which pairs random people from around the world together for real-time, webcam-based conversations. According to the Complaint, the Complainant created this business in 2009 when he was 17 years old.

A WhoIs search shows that the Complainant registered his primary domain name, <chatroulette.com>, on November 16, 2009.

Shortly after the launch of the site, it was attracting 500 users per day. One month later, in January 2010, it was attracting 50,000 users per day (or approximately 1.5 million users per month). By February 2010, the number of visitors had increased to 130,000 visitors per day. Between November 2017 and January 2018, the website had some 13.5 million visitors as measured by SimilarWeb or over four million visitors per month.

The Complainant has several registered trademarks:

(a) European Union Trade Mark No. 008944076, CHATROULETTE, in respect of a wide range of services in International Classes 35, 38 and 42 and which has been filed on March 10, 2010, and registered on December 4, 2012;

(b) European Union Trade Mark No. 008946352, CHATROULETTE.TO, in respect of a wide range of services in International Classes 35, 38 and 42 and which has been filed on March 11, 2010, and registered on August 19, 2012;

(c) German Trademark No. 3020100037067, CHATROULETTE, in respect of a wide range of services in International Classes 35, 38 and 42, which has been filed on March 10, 2010, and registered on February 21, 2013;

(d) United States Trademark No. 4,445,843, CHATROULETTE, for a range of services in International Classes 38 and 45, which was filed on January 10, 2011, and registered on December 10, 2013 claiming a first use in commerce on December 5, 2009.

There is also a trademark for CHATROULETTE registered in the name of “Chatroulette Inc.” in the Russian Federation, Trademark Reg. No. 429957, in respect of a wide range of services in International Classes 35, 38 and 42.

The disputed domain name was first registered on December 12, 2009. Initially, it was registered to one Mr. Robinson of Florida in the United States. In this period, the disputed domain name resolved to a parking page with pay-per-click (“PPC”) advertising links provided by the then registrar.

On September 17, 2010, the registrant became Xedoc Holding SA of Luxembourg. In this period, the disputed domain name redirected to the websites at <camlive.com>, <nudechat.com>, <freechat.com> or similar, which provided “live sex chat” webcams.

At some point after that date, the Respondent became the current registrant. So far as the information in the record shows, since the Respondent became the registrant, the disputed domain name has redirected to the website at <randomchat.com>. At least initially, this website included a prominent text box:

“What to Expect When Using Random Chat

Random Chat is an alternative to Chatroulette where people can talk to strangers, meet new friends and find love online. Join others for fun and excitement in our online chat, show yourself and see random strangers. Meet people from any corner of the world, talk to them, ask them questions and make new friends. Our Random chat is a free chat where fantasies can become realities. CHAT with whoever you desire be it a sexy girl or a gay guy on camera. Random Chat site is a cam site where you can find random people and chat to random people online.”

5. Discussion and Findings

No response has been filed. The Complaint has been sent, however, to the Respondent at the physical and electronic coordinates specified in the WhoIs record (and confirmed as correct by the Registrar) in accordance with paragraph 2(a) of the Rules. Accordingly, the Panel finds that the Respondent has been given a fair opportunity to present its case.

When a respondent has defaulted, paragraph 14(a) of the Rules requires the Panel to proceed to a decision on the Complaint in the absence of exceptional circumstances. Accordingly, paragraph 15(a) of the Rules requires the Panel to decide the dispute on the basis of the statements and documents that have been submitted and any rules and principles of law deemed applicable.

Paragraph 4(a) of the Policy provides that in order to divest the Respondent of the disputed domain name, the Complainant must demonstrate each of the following:

(i) the disputed domain name is identical or confusingly similar to a trademark or service mark in which the Complainant has rights; and

(ii) the Respondent has no rights or legitimate interests in respect of the disputed domain name; and

(iii) the disputed domain name has been registered and is being used in bad faith.

As the registration agreement is in English and the communications with the Registrar have also been in English, the Panel finds that English is the appropriate language of the proceeding: see paragraph 11 of the Rules.

A. Identical or Confusingly Similar

The first element that the Complainant must establish is that the disputed domain name is identical with, or confusingly similar to, the Complainant’s trademark rights.

There are two parts to this inquiry: the Complainant must demonstrate that it has rights in a trademark and, if so, the disputed domain name must be shown to be identical or confusingly similar to the trademark.

The Complainant has proven ownership of the registered trademarks referred to in section 4 above. The Panel further notes that the materials filed in the proceeding show that the Complainant commenced using “Chatroulette” early in December 2009.

Disregarding the generic Top Level Domain (“gTLD”) “.com”, the disputed domain name differs from the Complainant’s trademark by the substitution of a “t” for the “r” in the fifth letter. As the letter “t” is next to the letter “r” in the standard “QWERTY” keyboard, this substitution is an obvious example of “typosquatting”: WIPO Overview of WIPO Panel Views on Selected UDRP Questions, Third Edition ("WIPO Overview 3.0"), section 1.9.

Accordingly, the Panel finds that the Complainant has established that the disputed domain name is confusingly similar with the Complainant’s trademarks and the requirement under the first limb of the Policy is satisfied.

B. Rights or Legitimate Interests

The second requirement the Complainant must prove is that the Respondent has no rights or legitimate interests in the disputed domain name.

Paragraph 4(c) of the Policy provides that the following circumstances can be situations in which the Respondent has rights or legitimate interests in a disputed domain name:

(i) before any notice to [the Respondent] of the dispute, [the Respondent’s] use of, or demonstrable preparations to use, the [disputed] domain name or a name corresponding to the [disputed] domain name in connection with a bona fide offering of goods or services; or

(ii) [the Respondent] (as an individual, business, or other organization) has been commonly known by the [disputed] domain name, even if [the Respondent] has acquired no trademark or service mark rights; or

(iii) [the Respondent] is making a legitimate noncommercial or fair use of the [disputed] domain name, without intent for commercial gain to misleadingly divert consumers or to tarnish the trademark or service mark at issue.

These are illustrative only and are not an exhaustive listing of the situations in which a respondent can show rights or legitimate interests in a domain name.

The onus of proving this requirement, like each element, falls on the Complainant. UDRP panels have recognized the difficulties inherent in proving a negative, however, especially in circumstances where much of the relevant information is in, or likely to be in, the possession of the respondent. Accordingly, it is usually sufficient for a complainant to raise a prima facie case against the respondent under this head and an evidential burden will shift to the respondent to rebut that prima facie case. See, e.g., WIPO Overview 3.0, section 2.1.

The Complainant states that it has not authorised the Respondent to use the disputed domain name. Nor is the Respondent affiliated with it. So far as can be ascertained from the information about the Respondent (the Respondent having chosen to remain concealed behind the privacy service), the disputed domain name is not derived from the Respondent’s name.

The nature of the services being offered at the websites to which the disputed domain name resolves or has resolved do not qualify as a good faith offering under the Policy. Nor are they legitimate noncommercial or fair use.

The redirection of the disputed domain name to the website at <randomchat.com> is, as the notice on the <randomchat.com> website clearly stated, in competition with the Complainant’s business. Such use of a confusingly similar disputed domain name is clearly bad faith under the Policy.

The redirection of the disputed domain name to a website featuring PPC links without authorization is also not a legitimate use: WIPO Overview 3.0 section 2.9. The diversion of the disputed domain name to online sex webcam sites unauthorized by the Complainant is also bad faith under the Policy.

If (as seems likely) the Respondent became the registrant of the disputed domain name when the redirection to the “randomchat.com” website commenced, the use commenced after the Complainant had acquired its trademarks. Even if the Respondent became the registrant before that redirection, it must have been after the filing of the Complainant’s European Union and German trademarks, and after the Complainant had already obtained significant recognition in the market. See WIPO Overview 3.0, section 3.8.2.

Therefore, the Panel finds that the Complainant has established a clear prima facie case that the Respondent has no rights or legitimate interests in the disputed domain name.

The Respondent has not sought to rebut that prima facie case.

Accordingly, the Panel finds that the Complainant has established the second requirement under the Policy.

C. Registered and Used in Bad Faith

Under the third requirement of the Policy, the Complainant must establish that the disputed domain name has been both registered and used in bad faith by the Respondent. These are conjunctive requirements; both must be satisfied for a successful complaint: see, e.g., Burn World-Wide, Ltd. d/b/a BGT Partners v. Banta Global Turnkey Ltd., WIPO Case No. D2010-0470.

Generally speaking, a finding that a domain name has been registered and is being used in bad faith requires an inference to be drawn that the respondent in question has registered and is using the disputed domain name to take advantage of its significance as a trademark owned by (usually) the complainant.

Given the “typosquatting” character of the disputed domain name and its redirection to the “randomchat.com” website which for some time included the notice explaining that the service was an “alternative” to “Chatroulette”, there is a very strong inference that the Respondent was well aware of the Complainant’s trademark and has sought impermissibly to take advantage of it. The Respondent has not advanced any explanation about how the disputed domain name came to be adopted. Accordingly, the Panel finds that the disputed domain name was registered and is being used in bad faith.

The Panel finds therefore that the Complainant has also established the third requirement under the Policy.

6. Decision

For the foregoing reasons, in accordance with paragraphs 4(i) of the Policy and 15 of the Rules, the Panel orders that the disputed domain name <chattoulette.com> be transferred to the Complainant.

Warwick A. Rothnie
Sole Panelist
Date: September 28, 2018